DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-7 and 13-14 were rejected in the Office Action mailed on 03/17/2026.
Applicant filed a response, amended claim 1 and cancelled claim 7.
Claims 1-6 and 8-14 are currently pending in the application, of claims 8-12 are withdrawn from consideration.
Claims 1-7 and 13-14 are being examined on the merits in this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (U.S. Patent Application Publication 2019/0020025) and further in view of Uekusa et al. (U.S. Patent Application Publication 2019/0006671 – cited in newly submitted IDS).
Regarding claim 1, Matsumoto teaches a positive electrode active material (claim 4) comprising:
a lithium-rich manganese-based oxide (i.e., lithium metal composite oxide) (claim 4) (paragraph [0005]) represented by the following Chemical Formula 1 and having a structure in which a rock-salt-type lithium manganese oxide and a layered lithium transition metal oxide are in a mixed state (i.e., two types layered compounds) (claim 4) (paragraph [0184]),
[Chemical Formula 1]
Li1+αNixCoyMnzMtO2, where 0.25α≤0.55, x+y+z+1=1, 0.05≤x≤0.3, 0.1≤y≤0.4, 0.55≤z≤0.8. 0≤t≤0.1, and M is at least one selected from the group consisting of Al, Mg, V, Ti, Nb, Zr, and W (claim 4), which meets the requirements of the claimed formula where stoichiometric variables overlap the claimed ranges.
Matsumoto does not teach the lithium-rich manganese-based oxide has an internal porosity ranging from 4.0% to 13.0%.
Uekusa, also directed to a positive electrode active material (abstract), teaches a positive electrode active material with an internal porosity of 10% to 30% (paragraph [0179]). Further, Uekusa teaches such porosity increase the reaction surface area of the positive electrode active material (paragraph [0178]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto positive electrode active material to have an internal porosity between 10% to 30%, as suggested by Uekusa, in order to increase the reaction surface area of the positive electrode active material and increase output characteristics (paragraph [0178]).
It is noted that Matsumoto differ in the exact same stoichiometric range and porosity as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the stoichiometric range and porosity of Matsumoto overlap the instant claimed ranges and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 2-3, Matsumoto teaches in Chemical Formula 1, 0.25α≤0.55, x+y+z+1=1, 0.05≤x≤0.3, 0.1≤y≤0.4, 0.55≤z≤0.8. 0≤t≤0.1, and M is at least one selected from the group consisting of Al, Mg, V, Ti, Nb, Zr, and W (claim 4), which meets the requirements of the claimed formula where stoichiometric variables overlap the claimed ranges.
It is noted that Matsumoto differ in the exact same stoichiometric ranges as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the stoichiometric range of Matsumoto overlap the instant claimed ranges and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Matsumoto teaches wherein the rock-salt-type lithium manganese oxide includes Li2MnO3 (paragraph [0006], [0184]).
Regarding claim 5, Matsumoto teaches known formula for the lithium-rich manganese-based oxide includes Li2MnO3-LiNixCoyMnzO2, where 0.25α≤0.55, x+y+z+1=1, 0.05≤x≤0.3, 0.1≤y≤0.4, 0.55≤z≤0.8. 0≤t≤0.1, and M is at least one selected from the group consisting of Al, Mg, V, Ti, Nb, Zr, and W (paragraph [0005], [0014]) (claim 4) which meet the requirements of the claimed formula where stoichiometric variables overlap the claimed ranges.
It is noted that Matsumoto differ in the exact same stoichiometric range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the stoichiometric range of Matsumoto overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 13-14, Matsumoto teaches lithium secondary battery (10) comprising a positive electrode (111), a negative electrode (112), a separator (122) and an electrolyte, wherein the positive electrode includes a positive electrode active material layer containing the positive electrode active material of claim 1 (paragraphs 0325]-[0330]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (U.S. Patent Application Publication 2019/0020025) and Uekusa et al. (U.S. Patent Application Publication 2019/0006671 – cited in newly submitted IDS), as applied to claim 1 above, and further in view of Xu et al. (U.S. Patent Application Publication 2018/0114982).
Regarding claim 6, Matsumoto teaches the positive electrode active material has a secondary particle shape and an average particle size (D50) ranging from 2 µm to 10 µm (paragraph [0050].
Matsumoto does not teach the secondary particle shape has a plurality of primary particles having a particle size ranging from 50 nm to 200 nm aggregated.
Xu, also directed to a positive electrode active material (claim 4) comprising a lithium-rich manganese-based oxide (paragraph [0005]), teaches the active material having primary particle size aggregated into secondary particles with a particle size of 50 nm to 5µm (paragraph [0024], [0032]). Xu teaches if the primary particle size is too large, charging rate capability is reduced (paragraph [0035]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto primary particle size in the range of 50 nm to 5µm as taught by Xu in order to optimize the charging rate capability and allow lithium diffusion in the particles (paragraph [0035]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (U.S. Patent Application Publication 2019/0020025) and Uekusa et al. (U.S. Patent Application Publication 2019/0006671 – cited in newly submitted IDS), as applied to claim 1 above, and further in view of Zhang et al. (U.S. Patent Application Publication 2020/0044278).
Regarding claim 7, Matsumoto teaches the positive electrode active material as described above in claim 1 however, is silent with regards to the lithium-rich manganese-based oxide has the internal porosity ranging from 4.0% to 13.0%.
Zhang, directed to a battery (abstract), teaches a positive electrode active material including a lithium manganese oxide (paragraph [0091]; claim 33). Zhang teaches the porosity of the positive electrode active material greater than or equal to 10% (paragraph [0012], [0020], claim 33). Zhang teaches the porosity is related to the ion transport and improved performance (paragraph [0067]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto porosity to be greater than or equal to 10% in order to optimize ion transport and improve performance.
Response to Arguments
Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Uekusa.
With regards to the Double Patenting rejection, the arguments are persuasive and the rejection has been withdrawn. However, the amendments prompted a provisional non-statutory type double patenting rejection as set for below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 13-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 12-13 of copending Application No. 19/206,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the internal porosity of 4-13% of claim 1 of the instant application falls within the internal porosity range of 2.5-13% of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yoshima et al. (U.S. Patent Application Publication 2019/0089009). Yoshima teaches a positive electrode active material with an internal porosity of 1-30% (paragraph [0086]). Yoshima teaches if the internal porosity is less than 1%, dispersion resistance of lithium ion may become too high and if the internal porosity is more than 30%, internal resistance in the positive electrode active material tends to be high (paragraph [086]).
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 03/26/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
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